Getting Started With Patent Law

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In recent years, careers in patent law have caught the attention of a growing number of scientists. This interest is likely in response to a substantial need among biotechnology and pharmaceutical companies for individuals having a strong education in the life sciences, who are also licensed to practice before the U.S. Patent & Trademark Office (“PTO”) and able to assist such companies in protecting valuable intellectual property. In light of this demand, students pursuing a Ph.D., post-doctoral students, and those who currently have a Ph.D. may find the field of patent law to be a rewarding alternative career path.

Similarly, the need among medical device companies to protect their intellectual property has sustained the demand for individuals having a strong education in the medical sciences, such as those individuals having a medical degree, who are also licensed to practice before the PTO. Patent Agents The demand for individuals having extensive education in the life sciences and training in patent law has been fueled by a constant need among research-driven companies to capitalize on and patent the fruits of their research. Today, biotechnology, medical device and pharmaceutical companies are employing patent agents with increasing frequency to fulfill this need. A patent agent may be aptly characterized as a scientist who is licensed to prepare and prosecute patent applications before the PTO. Patent agents may represent a variety of organizations, including biotechnology and pharmaceutical companies, private research centers, governmental agencies, and universities. Of course, patent agents must possess sufficient education and/or work experience to determine whether a new invention – often involving cutting edge technology – is patentable in light of existing prior art (i.e., prior patents, patent applications, publications, etc.).

In addition, patent agents must be able to clearly and concisely describe in writing how to make and use an invention that a client wants to patent, as well as define how the invention is novel over existing technology, i.e., draft patent claims that dictate the scope of the subject invention. This is not an easy feat by any stretch of the imagination, and requires a thorough understanding of science, the relevant patent laws and good writing and communication skills. The professionals that generally work in the patent law arena include patent agents, patent lawyers and technology managers. Of these three professionals, Ph.D. holders, Postdocs and medical doctors may find working as a patent agent to be of particular interest.

After years of grueling science education, another three years of law school may not be too appealing. Fortunately, scientists of the Ph.D. and M.D. caliber already possess the most critical education and training required of patent agents: a strong foundation in the sciences. All that remains to fulfill the formal requirements of working as a patent agent is taking and passing the U.S. Patent Bar Exam, although this is no easy task. As mentioned above, a critical role of patent agents involves the preparation of patent applications. The types of inventions that are often subject to patent applications may be classified into the following general areas: electrical, mechanical, chemical and biotechnological.

Of course, these areas include an infinite number of subcategories. For example, with respect to biotechnological patent applications, the invention may comprise a novel gene, a new protein, a method for treating a disease by providing a patient with a therapeutic protein (e.g., a humanized monoclonal antibody directed to a cell target), a method for treating a disease by inhibiting the expression of a certain gene using an antisense approach (e.g., a gene encoding a protein implicated in a particular disease), and others. Obviously, inventions of this nature have created a need for patent agents having substantial education and training in this type of science, which students pursuing a Ph.D., post-doctoral students, and those who currently have a Ph.D. in the life sciences are uniquely suited to fulfill. Despite the existence of an endless number of inventions that may be patentable, well-rounded patent agents are generally capable of preparing and prosecuting patent applications directed to most inventions that fall within their technical backgrounds.

For example, an agent with a solid background in bioorganic chemistry will, preferably, also be capable of assisting clients with inventions dealing with molecular biology or immunology. Regardless of an agent’s specific education and experience, it will always be the case that he/she must be capable and willing to learn new technology that does not fall squarely in line with his/her previous research focus, education and experience. Many patent agents find this continuous need to learn new technology to be a rewarding experience.

Even before an agent begins to draft a patent application, he/she is often asked to assess the patentability of the subject invention. In order to address this type of issue, of course, the patent agent must identify the relevant prior art by researching the patent literature, technical or scientific literature, and what is generally known in the field by other scientists. Based on this information, the agent must determine whether the invention is useful, novel and nonobvious in light of the prior art. This information will also benefit the agent when it comes time to drafting the patent claims, i.e., by clarifying the scope of the invention in light of what is already known in the field. In addition to patent preparation, patent agents “prosecute” pending patent applications.

The term “prosecution” generally refers to representing a patent applicant during the PTO’s examination of the subject patent application. In many cases, the PTO will initially reject the patentability of an invention, at which point the patent agent begins a written dialog with the PTO. During this dialog, the patent agent may decide to narrow the patent claims in order to distinguish the subject invention from the prior art identified by the PTO and/or submit written arguments to the PTO emphasizing and illustrating the patentability of the subject invention. Such “prosecution” procedures are undertaken with the goal of convincing the PTO that the subject invention is patentable and, therefore, worthy of a patent. Here again, the substantive arguments that must be made during prosecution, often to distinguish an invention for which a patent is sought from previous technology described in a prior art patent identified by the PTO, requires a thorough understanding of the relevant science and patent laws. And, of course, good writing skills are a necessity. Similarly, patent agents are often called upon to work in collaboration with attorneys to determine whether a party has freedom-to-operate (“FTO”) or, in other words, the right to use a particular invention or technology without infringing third-party patent rights.

That is, a patent agent may be asked to analyze whether an invention, even a separately patentable invention, may nonetheless infringe upon existing patent rights held by others. The thought of technology being separately patentable, but still within the scope of an issued patent, is often a confusing concept for individuals who are unfamiliar with the patent laws. In general, earlier-filed patents may claim technology that is so novel as to warrant fairly broad claims. For the purpose of illustration, assume that a scientist discovered a previously unknown compound, and found that it is useful in treating cancer. Depending on the status of the prior art, the scientist may pursue patent protection for the compound itself and any use of that compound in treating cancer. Such “ground breaking” discoveries may be found by the PTO to deserve broad claims, often contained in what are commonly referred to as “genus-type” patents. Of course, the patent system seeks to encourage others to improve upon existing technology subject to and disclosed in issued patents. That is, scientists may later discover improvements to existing technology that are useful, novel and nonobvious, and thus, separately patentable. To follow on the hypothetical above, another scientist may subsequently discover that the new compound is particularly useful in treating prostate cancer when administered intravenously at specific concentrations.

Because these specific criteria were not previously known, methods of treating prostate cancer using the above compound that incorporate these criteria may be considered novel and nonobvious, and also deserving of a patent. Now, with respect to the FTO status of the “improvement”, the scientist who discovered the utility of the new compound in treating prostate cancer at specific concentrations may need a license from the first patent holder who owns broad claims to the compound itself and methods of using it to treat cancer generally. To further explain this principle, assume that the scientist who developed the “improvement” works for a pharmaceutical company, and is required pursuant to an employment contract to assign his rights in the discovery and corresponding patents to the company. The pharmaceutical company may not have rights to sell the compound in a pre-formulated, optimum concentration for use in treating prostate cancer in accordance with the scientist’s discovery. Rather, before it would have such rights, the company may need to take a license from the holder of the first-issued patent. As mentioned above, patent agents often assist companies in navigating through and analyzing third-party patents, in order to determine whether such companies may need a license under a particular patent to commercialize a product.

Again, these concepts are complicated and not easy to grasp. If you are still confused, don’t let it deter you from considering a career as a patent agent. If you have acquired (or are in the process of acquiring) a doctorate degree in the life sciences, rest assured, the above concepts are nothing that you can’t handle: it may just take some additional time and information for you to understand. The following provides a brief description of the U.S. Patent Bar Exam, which a scientist must pass in order to be licensed to work as a patent agent.

The Patent Bar The PTO requires that applicants who want to sit for the U.S. Patent Bar Exam possess a certain level of education and/or training in a technical subject. The most common method of satisfying this requirement is by obtaining a bachelor degree in a Recognized Technical Subject. The PTO publishes a “General Requirements Bulletin for Admission to the Examination for Registration to Practice in Patent Cases Before the United States Patent & Trademark Office.”[1] This Bulletin sets forth the specific degrees that fall within this category of Recognized Technical Subjects. The degrees include most “hard sciences,” including biology, chemistry, physics, and most engineering disciplines. The U.S. Patent Bar Exam is divided into two, three-hour sessions. Each session consists of 50 multiple-choice questions. Applicants must correctly answer at least 70% of the questions that are actually scored in order to pass the exam (only 90 of the 100 questions are scored). The exam is designed to test an applicant’s knowledge and understanding of (i) patent law and U.S. PTO rules, practice and procedure, (ii) patent claim drafting and (iii) how to apply the U.S. patent laws to a specific set of facts.

There are several reputable preparatory classes offered by various organizations. The following table lists just a few examples of such organizations, but in no way is exhaustive: Organization Website Practicing Law Institute www.patentbarreview.com BAR/BRI Patent Bar Review http://www.patentbarbri.com Patent Resources Group www.patentresources.com Although taking a patent bar review course may be a useful exercise, some patent agents have suggested that actual work experience in the field can be just as useful. Indeed, some have even argued that actually working with the patent laws, PTO rules and procedures and drafting patent claims and specifications may be the best way to prepare for the exam. Of course, in order to obtain such experience, one must have a job at a law firm, corporate law department, or university technology management office where such activities occur. Some individuals who do not have the time and/or money to attend a patent bar review course elect to prepare for the exam by themselves.

Many of these individuals begin by visiting the PTO’s website and downloading several of the previously administered exams, along with the answers and explanations, and several important references that are tested on the exam. Title 35 of the United States Code, Chapter 37 of the Code of Federal Regulations (“CFR”) and the Manual of Patent Examining Procedure (the “MPEP”) are tested on the exam. The MPEP is generally considered to be a good place to start as it cites and, at times, describes the relevant portions of Title 35 and the CFR. The MPEP is publicly available, and can be downloaded from the PTO’s website. Yet another way that some individuals prepare for the patent bar exam is through the use of a home-study patent bar review course. Such home-study courses are, typically, less expensive than the live, lecture-type courses, which also may involve traveling costs. In addition, home-study courses allow individuals to study at their own pace in accordance with their work and/or school schedules.

The effectiveness of such home-study courses will most likely vary based on each individual’s study habits, and may be the better approach for some, but not others. An example of such organizations that offer home-study courses can be found at www.patbar.com. In addition, some of the organizations listed in the above table may offer to sell their course materials for home-study. In case you were wondering about average pass rates for this exam, in recent years the pass rates have generally ranged from 30% to 60%. Thus, passing the U.S. Patent Bar Exam is by no means an easy task to complete. We should mention that some scientists who are considering going to law school first prepare and sit for the Patent Bar Exam. For those who pass and become patent agents, it provides a good opportunity to experience the practice of patent law before making the decision to attend law school. In addition, for those who eventually decide to pursue a law degree, it may provide a great opportunity to work part-time during law school, or even work full-time while attending law school on a part-time basis. Patent Lawyers In many ways, the life of a typical patent lawyer is similar to that of a patent agent.

For example, similar to patent agents, patent lawyers prepare and prosecute patent applications, advise clients on the patentability of their discoveries, and advise clients as to whether their technology may infringe other third-party patent rights. An additional role of patent lawyers, but not patent agents, relates to the enforcement of issued patents through litigation. Patent litigation has many similarities to general commercial litigation. In other ways, however, patent litigation is very unique. It’s similar in that the rules of civil procedure apply and standard litigation strategies are often followed. The nature of most patent disputes involves one party accusing another of infringing its patent. This type of allegation may ultimately require both sides to present their case to a court and jury by arguing whether the accused product or process does in fact infringe the patent. As you can imagine, explaining the technology-intensive subject matter of patents, and the meaning of legal patent claims, to a jury and court can be an enormous challenge.

In fact, imagine trying to educate a jury on the complex workings of a biotechnological invention, no doubt a formidable task. It is this challenge, however, that many patent attorneys, and patent litigators in particular, enjoy most. Unlike the previously-described functions, patent litigation does not require that the responsible attorney be licensed before the PTO, i.e., have passed the U.S. Patent Bar Exam. Obviously, it is nonetheless extremely helpful to have a solid background in the relevant technology and understanding of the patent laws. Another function that patent attorneys often perform relates to the negotiation and drafting of licensing agreements. In certain cases, clients may have patented valuable technology that they are willing to share with third-parties. That is, some clients may want to sell an issued patent or license the patent to a third-party in exchange for a fee or running royalties. This is a common method of generating revenue from a patent portfolio that companies and universities are pursuing at a growing rate.

In these situations, patent attorneys are often requested to assist in the negotiation of the terms and the drafting of the agreement. This function is often referred to as the “transactional” side of intellectual property law. Here again, most companies today prefer to engage attorneys who have a thorough understanding of the technology being licensed, in order to properly value the deal and prepare appropriate terms within the license agreement. Hence, this type of work has also increased the need for attorneys having a strong education in the life sciences. Finally, it should be noted that many patent attorneys do not restrict their practice to patent law alone. Indeed, many patent attorneys may work on, for example, copyright, trademark or general commercial litigation matters as well. As licensed attorneys, they have the opportunity to tailor their practice in a way that best suits their interests. In contrast, patent agents are not licensed to practice law, and thus, the responsibilities accorded to agents are generally more focused when compared to those of patent attorneys. Upon graduating from an ABA (American Bar Association) accredited law school and passing the bar exam in at least one state, a lawyer is entitled to practice most types of law in the state in which he/she is licensed. Patent law is an exception to this general rule. That is, in order to practice before the United States Patent & Trademark Office and, for example, prepare and prosecute patent applications on behalf of a client, the individual must also sit for and pass the U.S. Patent Bar Exam.

Thus, if you have the noble intention of pursuing a career as a patent attorney, you will be accorded the unique privilege of having to pass two bar exams, the state bar and the patent bar. For those individuals, the following provides additional information regarding law school. Law School For individuals who wish to pursue a career as a patent attorney, a law degree is obviously required. The pursuit of a law degree can be an extremely rewarding experience. Indeed, the three or more years that one spends in law school involves thought provoking lectures, relationships with fellow students, perhaps valuable and memorable experiences during summer internships, work on law reviews and/or moot court teams. Importantly, scientists who are considering whether to attend law school will find that some schools offer part-time programs, which may allow students to maintain a full-time job and earn an income (thus reducing the financial burden of a legal education). Today, as you may know, legal education is extremely expensive. Aside from the three years during which full-time students are unable to work full-time jobs and thus forgo income, the costs of living, tuition, and books can be considerable.

The level of debt that many law graduates are saddled with today can be crippling. This debt may obviously create a significant financial strain for a graduate, and, in particular, for those who are unable to land high-paying jobs after graduation or who pursue careers in fields that do not involve high starting salaries. There are ways, however, to lessen the financial burden of a legal education. Many practicing scientists who wish to pursue a law degree consider attending law school on a part-time basis. This approach seems particularly more common for future patent attorneys than for any other type of attorney. There are several reasons for this phenomenon. First, many scientists do not acquire an interest in patent law until years into their career. Thus, by the time they decide to attend law school, they have become accustomed to making a good salary, and probably have other financial responsibilities that cannot be ignored.

Therefore, attending law school on a part-time basis allows such individuals to pursue a career in patent law without sacrificing full-time employment, and the salary that it provides. Although attending law school on a part-time basis can mitigate some of the debt and financial strain that may otherwise accrue from attending law school, this approach is not without its own drawbacks. Obviously, working full-time and attending law school demands a majority of a student’s time — not accounting for other family-oriented obligations that one may have. In addition, a student’s performance in law school can be critical to his/her success in finding a first job. If a student’s schedule is too encumbered, the amount of time that he/she may have to devote to studying and exam preparation may suffer. This, of course, may translate into a less than desired class ranking, grade point average, etc. (which are critical for law graduates in finding desirable employment). What’s more, much of the learning that occurs during law school involves discussions with other students. Indeed, a somewhat prevalent learning device in law school is the group meeting/discussion. These self-motivated and voluntary meetings are, generally, more prevalent during the end of each semester – when students begin compiling, summarizing and reviewing lecture notes in preparation for the much dreaded final exams.

For many classes, the final exam is the only exam administered, and thus, the only metric by which law professors assign grades. It is during these meetings when students may discuss certain issues raised during previous lectures, or simply review their notes and discuss issues that are expected to be covered on the exam. Unfortunately, for part-time students whose schedules are hopelessly encumbered, attending these peer discussions may not be possible. Thus, such students may not benefit from the learnings that occur during these meetings as well as the collegiality. Another factor that one should consider in deciding whether to attend law school on a part-time or full-time basis is the number of years that it will take to complete. Pursuing a law degree on a part-time basis typically requires four to five years to complete – depending on the course load that the student takes on as well as whether the student attends class during summer sessions. In contrast, pursuing a law degree on a full-time basis takes only three years.

Additionally, after researching law schools, one will notice that the number of schools offering part-time programs is limited, and thus, will potentially narrow the choices of schools to attend. Therefore, if an individual is dedicated to a particular school or geographical region, attending law school on a part-time basis may not be an option. Hopefully, by now, you can appreciate that there are significant pros and cons to attending law school part-time, and there is no single “right answer” for all individuals. Rather, a student’s decision to attend law school part-time or full-time should be dictated by his/her own needs, options, goals and desires. Similar to comparing the pros and cons of attending part-time versus full-time programs, many individuals consider whether attending a law school that offers an increased number of courses in intellectual property law is generally recommended.

As you might expect, most law schools offer one or more basic courses in intellectual property, such as general courses in patent law, trademark law and copyright law. Some law schools, however, offer additional and more specialized courses relating to intellectual property, e.g., courses in patent claim drafting, transactional intellectual property, etc. The following represents a short list of law schools that appear to offer additional courses in intellectual property, but in no way is this an exhaustive list of such schools: Benjamin N. Cardozo School of Law Franklin Pierce Law Center George Washington University National Law enter John Marshall School of Law University of California – Berkeley Again, you may find after researching one or more of the foregoing schools – or other schools not shown above – that they indeed offer more courses relating to intellectual property than others. Thus, attending one of these schools would provide the opportunity to take additional classes in intellectual property, which may interest you more than other classes.

In addition, having the opportunity to take more specialized courses in intellectual property may be useful to supplement a student’s preparation for the Patent Bar Exam, as would be a class relating to patent claim drafting. Furthermore, having this opportunity would provide more background information related to patent law that other graduates will not have upon entry into the work force. Whether a particular school offers an appreciable number of courses relating to intellectual property is a factor that students should consider, but should not be the only factor. Most notably, students should consider the general reputation of the law school as well. Many employers, including law firms and corporations, consider the reputation and relative prestige of the law school that a candidate for employment attended. The formula that employers use to assess any given school’s reputation will vary. As you may know, some organizations have gone so far as to “rank” law schools, such as in the well-known rankings published by U.S. News & World Report.

Of course, such rankings may be very useful in gauging the general reputation of a particular school, but please note that some employers may rely more on such rankings than others. To emphasize, please know that the reputation of the law school that an individual attends can be very important when he/she is seeking a summer internship and/or a first job after law school. With that said, we do not imply that the schools listed above are not reputable or prestigious, as many of those schools are indeed considered to be extremely reputable and prestigious. As previously stated, the point here is that whether or not a school offers specialized courses in intellectual property should be one of several factors that individuals consider in identifying a potential law school to attend. Before you matriculate into law school, however, a few minor details must be addressed, sarcastically speaking of course. In general, individuals who wish to apply to a law school in the United States must take the Law School Admission Test (“LSAT”).

The LSAT might be accurately characterized as a basic skill test, i.e., the exam does not require knowledge of any specific subject matter. Rather, the exam is designed to test an individual’s reading, logic, analytical and writing skills. Thus, the exam does not require that an individual have a degree in a traditional “pre-law” curriculum. The LSAT score is an incredibly important factor as many law schools consider this to be among the most important criteria when deciding whether to admit an applicant. In light of its importance, applicants are strongly urged to adequately prepare for the exam. Of course, there is no one right way to prepare for the exam. There are several reputable organizations that offer materials and/or classes to assist students in their preparation. Furthermore, previously-administered LSAT exams may be obtained, which provide a great way of becoming familiar with the exam’s format, the types of questions often presented and answering questions in accordance with the limited time allotted.

In addition to an applicant’s LSAT score, law schools generally attribute much significance to his/her previous academic record, i.e., the applicant’s cumulative grade point average from a previous or current undergraduate and/or graduate institution. In order to ensure that all procedural requirements for applying to law school are satisfied, applicants must research the specific requirements for each school to which they intend to apply. This is the only way to definitively identify what steps must be taken to apply to the various law schools of interest. With that said, if you are considering applying to law school, we want to stress once again that you should research several law schools and determine which school best suits your needs. Employment By this point, you may have decided that patent law is a field that you want to consider as a career option.

For those who are interested in the current status of the job market for patent agents and patent attorneys, the websites for various intellectual property recruiting agencies may provide some useful information. The type and number of positions advertised by such agencies may give you a basic view of the current demand for patent agents and attorneys. A representative intellectual property legal recruiter is William K. McLaughlin Associates (www.wkmclaughlin.com). We mentioned that patent agents and attorneys often find employment in private law firms, as well as in corporations. In fact, the vast majority of patent agents and attorneys work in private law firms or corporations. Of course, these professionals may also work in governmental agencies, universities or private research institutes. Thus, when the time comes, individuals who are pursuing careers as patent agents or attorneys might consider these options as well. The positions for most agents are advertised and referred to as “patent agents,” or, in some law firms, as “technical advisors.” In general, corporate law departments tend to employ more patent agents than law firms. In fact, many corporate law departments include a team of patent agents, including staff level (i.e., entry level) and senior level patent agents. Of course, the responsibilities accorded to senior level patent agents may include supervising the preparation and prosecution of patent applications, training and supervising junior level agents, and advising management on patent strategy.

With respect to patent attorneys, law firms generally have three levels of positions, “partners,” “counsel” and “associates.” In general, associates and counsel are treated as employees of the law firm, i.e., they are paid standard salaries, receive benefits, etc. After finishing law school and beginning work with a law firm, an attorney will be classified as an associate for a number of years, often between four to ten years depending on the firm. Following an attorney’s term as an associate, the firm will “vote” to determine whether an associate should be converted to a partner. If the firm votes not to convert an associate to a partner, the associate will likely be converted to “counsel,” a senior level attorney. Of course, the criteria that are considered during this “voting” process varies among firms, but often includes an attorney’s reputation within and outside the firm, whether an attorney has acquired his or her own clients, etc. If the associate is converted to a partner, the attorney will generally have more control over the operation of the firm and, in many cases, will be considered to have an ownership interest in the firm. In many law firms, partner compensation is driven by firm profits.

Typically, partners are not paid salaries; rather, they share in the profits of the firm (whether such profits are good or poor for a particular fiscal period). Not surprisingly, a corporate law department has its own form of hierarchy. In many cases, entry or junior level patent attorneys are referred to as “intellectual property counsel”, “corporate patent counsel”, or similar designations. Such attorneys often report to mid-level attorneys, who are often referred to as “associate general counsel,” who in turn report to a “general counsel” (the designation that is typically given to the head attorney within a corporation). In large companies, a corporate law department is divided into several practice areas, e.g., tax, merger & acquisitions, real estate, intellectual property, etc. In such departments, each group may have its own hierarchy, including its own entry level attorneys, associate general counsel, and general counsel (e.g., General Counsel for Intellectual Property). In recent years, many employers, including both law firms and corporate law departments, have expressed a desire for patent professionals with advanced degrees in biology, biochemistry, molecular biology, etc. The reason for this trend is perhaps that the relative complexity of this area of science requires advanced education.

Thus, Ph.D. holders and Postdocs in the life sciences may find themselves “in the right place at the right time.” Indeed, a trend among employers in the biotechnology industry has emerged that has placed a premium on patent professionals with advanced degrees in the life sciences. Given the rate at which this industry is growing, the demand for such individuals into the near future is expected to remain relatively strong. Many find that careers in patent law provide a unique combination of science, business and legal disciplines. It is this interdisciplinary aspect of such careers that make them considerably diverse, interesting and challenging. Regardless of whether you ultimately decide to pursue a career in patent law, gathering information and learning about potential career paths, as you are doing now, are always recommended. With that said, we wish you good luck in your consideration of potential career paths, and hope that success finds you always.